‘OFFENSIVE’ TRADEMARKS: HAVE THE FLOODGATES OPENED?
On 24 June 2019, the US Supreme Court issued an opinion that allows for federal registration of a class of trademarks not previously permitted.
The Supreme Court’s decision in Iancu v. Brunetti (2019) considered whether the Lanham Act’s ban on registration of “immoral... or scandalous matter” violated the First Amendment of the US Constitution. When examining trademarks under that standard, the US Patent and Trademark Office (PTO) would ask whether the public would view the mark as “shocking to the sense of truth, decency or propriety”, “offensive” or “disreputable”.
Using this provision of the Lanham Act, the PTO routinely refused to register trademarks that communicated “immoral” or “scandalous” views, including trademarks regarding drug use, religion and terrorism. The Iancu decision struck down this provision, completely changing the trademark registration landscape.
Erik Brunetti, an artist and entrepreneur who founded a clothing line that uses the trademark F-U-C-T, had his trademark application to register “FUCT” rejected by the PTO after determining that it was “vulgar”. Mr Brunetti then challenged the bar on “immoral or scandalous” trademarks in the Federal Circuit, which found the prohibition to violate the First Amendment. The Supreme Court agreed, striking down the provision because it discriminates on the basis of viewpoint and thus collides with the First Amendment.
Oct-Dec 2019 issue
Prince Lobel Tye LLP